4.3 Entry, alteration or removal of a memorandum

⁸A memorandum may include a limitation, explanation, condition or an interest that relates to the trade mark that does not in any way extend the rights given by the existing registration of the trade mark.

Regulation 137 of the Regulations sets out the necessary formalities when an owner requests the entry, alteration or removal of a memorandum in the register pursuant to section 78(c) of the Act. The addition, alteration or removal of a memorandum must not in any way extend the rights given by the existing registration of the trade mark.

A memorandum may be entered on the register that has the effect of limiting the scope of the applicable registration. It is important to note that such a memorandum cannot later be altered or removed if the effect of doing so would be to extend the scope of the registration.

Accordingly, it may be important to make clear in the memorandum the long-term effect of the memorandum. For example, if the owner of a mark has agreed by contract to a geographical limitation on the use of the mark then any time period applying to that limitation should also be noted in the memorandum as a memorandum that limits the scope of the registration, once entered, cannot later be removed. It may not be possible to clarify the scope of a memorandum by altering the memorandum if it would effectively extend the scope of the registration. It will also not be possible to remove a memorandum if its removal would effectively extend the scope of the registration.

A request to enter, alter or remove a memorandum must be in writing and contain the following information:

1. The owner’s name;
2. If the owner has an agent, the agent’s name;
3. The trade mark’s registration number; and
4. The memorandum to be entered on the register, the alteration to be made to a memorandum, or the memorandum to be removed (as the case may be).

The Commissioner may request the memorandum to be entered in a particular format to ensure that the scope of the memorandum is clear. For example, where a request is made for a colour limitation to be entered as a memorandum, a description of the colour(s) in the usual manner acceptable to the Commissioner, using a widely known and readily available colour standard, such as the colour indexing scheme of the Pantone® colour system, will be necessary.

Where a memorandum is entered as a result of an agreement between the owner and a third party, the memorandum should reflect that agreement. For example:

As a result of an agreement between the owner of the trade mark and a third party, the owner of the trade mark agrees to…

In the past a further memorandum may have been added if the circumstances of the agreement between the owner and the third party changed. Now a memorandum recorded on the register may be altered or removed provided the rights of the existing trade mark registration are not extended. It is important to be aware of the long-term effect a memorandum may have. It may not be possible to clarify the scope of a memorandum by altering the memorandum, or removing the memorandum completely if it would effectively extend the scope of the registration.

Where the request to enter, alter or remove a memorandum is accepted, the Commissioner will enter or alter the memorandum on the register or remove the memorandum from the register and notify the owner.

Footnote

⁸ See section 208(3)(a) of the Trade Marks Act 2002.